The Wrestling Zone, Inc.

Trademark Trial and Appeal Board

Nov 2, 2009

No. 77561949 (T.T.A.B. Nov. 2, 2009)

Oral Hearing: September 8, 2009 Mailed: November 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Wrestling Zone, Inc.
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Serial No. 77561949
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Donald L. Dennison of Dennison, Schultz & MacDonald for The
Wrestling Zone, Inc.

Judy Helfman, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
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Before Bucher, Holtzman and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, The Wrestling Zone, Inc., seeks to register the
mark WEW in standard characters for "pay-per-view and on-demand
television transmissions of live wrestling exhibitions" in Class
38.1

1 Application Serial No. 77561949 filed September 4, 2008, asserting a
date of first use and first use in commerce on February 17, 2001. The
application also includes goods in Class 9 ("pre-recorded DVDs
featuring wrestling exhibitions"). However, the refusal to register
pertains solely to Class 38. The application includes a claim of
ownership of Registration Nos. 2753991 and 3477169.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 77561949
2
The examining attorney refused registration under Sections
1, 3 and 45 of the Trademark Act on the ground that the specimen
does not show use of the mark for the identified services as
required by Trademark Rule 2.56.
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was held.
Section 1(a) of the Trademark Act provides that an
application must be accompanied by a specimen of the mark as used
in commerce. Section 45 provides that a service mark is used in
commerce "when it is used or displayed in the sale or advertising
of services," and Trademark Rule 2.56(b)(2) in turn requires a
specimen showing the mark as actually used in the sale or
advertising of the identified services.
In order to show service mark use, the specimen must show
use of the mark in a manner that would be perceived by the
relevant public as identifying the specified services and
indicating their source. See Section 45 of the Act; and In re
Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA
1973). At a minimum, the specimen must show a direct association
between the services and the mark sought to be registered. See
In re Advertising & Marketing Development, 821 F.2d 614, 2 USPQ2d
2010, 2014 (Fed. Cir. 1987).
The specimen submitted with the application is described by
applicant as a promotional poster. The mark "WEW" is centered at
Ser No. 77561949
3
the top of the poster followed by the wording "WOMENS EROTIC
WRESTLING" directly below. The middle of the poster depicts two
partially clad women with "CENSORED" displayed across their
chests and the wording "NUDE STREET FIGHT" superimposed over
their images. The following information appears at the bottom of
the poster:
AVAILABLE ON
DVD & DOWNLOAD
AND VIDEO-ON-DEMAND

Applicant argues that the poster is an appropriate specimen
for services; and that the poster clearly shows use of the mark
WEW and clearly refers to video-on-demand services. Applicant
points out that "video-on-demand" is an actual transmission by a
television or cable network, and to support this point, has
submitted an entry for "video on demand" from wikipedia.org which
states in part:
Video on demand (VOD)...systems allow users to select
and watch/listen to video...content on demand. VOD
systems either stream content through a set-top box,
allowing viewing in real time, or download it to a
device...for viewing at any time. The majority of
cable- and telco-based television providers offer
both VOD streaming, such as pay-per-view, whereby a
user buys or selects a movie or television program
and it begins to play on the television set almost
instantaneously, or downloading to a DVR rented from
the provider, for viewing in the future. ...
Download and streaming video on demand systems
provide the user with a large subset of VCR
functionality including pause, fast forward, fast
rewind, slow forward, slow rewind, jump to
previous/future frame etc. ...

Ser No. 77561949
4
Applicant also notes that the ID Manual lists "broadcast services
and provision of telecommunication access to films and television
programmes provided via a video-on-demand service" as a proper
and recognized service in Class 38. It is applicant's apparent
position that the reference to both the mark and the video-on-
demand service in the specimen is sufficient to demonstrate a
direct association between the mark and the services.
There is no question that "video-on-demand" states a service
and that the specimen "refers" to the service. However, it is
not enough that the mark and the services both appear in the same
specimen. In order to create the required "direct association"
the specimen must not only contain a reference to the service,
but also the mark must be used on the specimen to identify the
service and its source. That is not the case here. The poster
is an advertisement for services, but not for a video-on-demand
service. It is an advertisement for an entertainment event, and
the mark WEW as used in the advertisement identifies the nature
of the entertainment, i.e., WOMENS EROTIC WRESTLING and a NUDE
STREET FIGHT. The reference to video-on-demand on the specimen
is used only in an informational sense to notify the public of
the options available for viewing the wrestling event.2 As noted

2 We note that there is no explanation in the record as to how a "live"
event can be broadcast by means of "video-on-demand" when, based on the
Wikipedia information, this type of service appears to refer to the
broadcast of stored content and pre-recorded programs rather than live
events.
Ser No. 77561949
5
by the Court in In re Universal Oil Products Co., 476 F.2d 653,
177 USPQ 456, 457 (CCPA 1973):
The requirement that a mark must be "used in the sale
or advertising of services" to be registered as a
service mark is clear and specific. We think it is
not met by evidence which only shows use of the mark
as the name of a process and that the company is in
the business of rendering services generally, even
though the advertising of the services appears in the
same brochure in which the name of the process is
used. The minimum requirement is some direct
association between the offer of services and the
mark sought to be registered therefor. (Emphasis in
original.)

Although the WEW mark and the video-on-demand service both
appear in the advertisement, the mark would be perceived by the
public only as identifying applicant's entertainment services,
and not as identifying the form in which the entertainment is
transmitted to the public, that is by means of video-on-demand.
Thus, the required direct association between the mark WEW and
the video-on-demand service cannot be made.3
We also point out that although the WEW event is clearly
"transmitted" via video-on-demand, this activity in itself is not
the equivalent of a "transmission" service, at least for purposes
of proper classification. The U.S. Patent and Trademark Office
recognizes the distinction between the two types of services by
classifying them in two separate classes. See Acceptable

3 We are not saying that the mark could not be used on the same
specimen to identify both services, but only that in this case it is
not used in such manner.
Ser No. 77561949
6
Identification of Goods and Services Manual which lists, for
example, "provision of non-downloadable(4) films and television
programmes via a video-on-demand service" in Class 41; and
"video-on-demand transmission services" in Class 38.
As stated in the "explanatory notes" of the Nice
Classification, Class 38 "includes mainly services allowing at
least one person to communicate with another by a sensory means";
and this class includes, in relevant part, "services which
consist essentially of the diffusion of radio or television
programmes." This is distinguished from Class 41 which, based on
the Nice Classification, "covers mainly... services intended to
entertain or to engage the attention"; and "includes, in
particular: ...services having the basic aim of the
entertainment, amusement or recreation of people."
With the above guidelines in mind, it seems clear that for
purposes of proper classification, Class 38 services involve the
means or medium of transmission, not the subject matter of the
transmission. In this case, the mark WEW is used on the specimen
to identify the subject matter of the transmission. Based on the
specimen, the mark is used in a manner that would be perceived by
the public as identifying a program that is transmitted via
video-on-demand, which as discussed above is a Class 41

4 We note that "downloadable" films and television programs provided
via a video-on-demand service, in contrast, are classified in Class 9.
Ser No. 77561949
7
"entertainment" service, not a Class 38 "transmission" service.5
In view of the foregoing, we find that the specimen does not
show use of WEW in commerce as a mark for the Class 38 services.
Decision: The refusal to register as to Class 38 is
affirmed. The application will proceed to publication in
Class 9.

5 There is nothing in the record to indicate that applicant actually
renders a video-on-demand service, although based on the explanation
given by applicant's counsel during the oral hearing, and contrary to
the examining attorney's contention, applicant may well be providing
some form of transmission service. As we understand it, applicant
transmits the signals for its live wrestling events to a third-party
service which in turn disseminates the signals to the public. This
does not appear to constitute a "video-on-demand" transmission by
applicant. Nevertheless, the only issue before us is whether the
specimens show use for the services as identified, and not whether
applicant is actually providing the named services.